4. Patent Infringement

Patent infringement

It is the making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorization of the patentee.

Provided, That, this shall not apply to instances covered by Sections 72.1 and 72.4 (Limitations of Patent Rights)¹; Section 74 (Use of Invention by Government)²; Section 93.6 (Compulsory Licensing)³; and Section 93-A (Procedures on Issuance of a Special Compulsory License under the TRIPS Agreement)⁴ of this Code [Sec. 76.1, RA 8293 as amended by RA 9502]⁵.

Anyone who actively induces the infringement of a patent or provides the infringer with a component of a patented product or of a product produced because of a patented process knowing it to be especially adapted for infringing the patented invention and not suitable for substantial non-infringing use shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer [Sec. 76.6, RA 8293]⁶.

1. Literal Infringement

In using literal infringement as a test, resort must be had in the first instance to the words of the claim.

To determine whether the particular item falls within the literal meaning of the patent claims, the court must juxtapose the claims of the patent and the accused product within the overall context of the claims and specifications, to determine whether there is exact identity of all material elements [Godinez v. CA, G.R. No. L-97343]⁷.

The test is satisfied if:

• The item that is being sold, made or used conforms exactly to the patent claim of another;
• One makes, uses or sells an item that has all the elements of the patent claim of another plus other elements.

2. Doctrine of Equivalents

Under the doctrine of equivalents, an infringement occurs when a device:

• Appropriates a prior invention by incorporating its innovative concept, albeit with some modification and change,
• Performs substantially the same function in substantially the same way, and
• Achieves substantially the same result [Godinez v. CA, G.R. No. L-97343]⁸.

The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the burden to show that all three components of such equivalency test are met [Smith Kline Beckman Corporation v. Court of Appeals and Tryco Pharma Corporation, G.R. No. 126627, 14 August 2003]⁹.

Defenses in Actions for Infringement

In an action for infringement, the defendant, in addition to other defenses available to him, may show the invalidity of the patent, or any claim thereof, on any of the grounds on which a petition of cancellation can be brought under Section 61¹⁰ [Sec. 81, RA 8293]¹¹.

Patent found invalid may be canceled

In an action for infringement, if the court shall find the patent or any claim to be invalid, it shall cancel the same, and the Director of Legal Affairs upon receipt of the final judgment of cancellation by the court, shall record that fact in the register of the Office and shall publish a notice to that effect in the IPO Gazette [Sec. 82, RA 8293]¹².

Doctrine of File Wrapper Estoppel

Patentee is precluded from claiming as part of patented product that which he had to excise or modify in order to avoid patent office rejection, and he cannot disregard claim limitations added to obtain the patent [Advance Transformer Co. v. Levinson, 837 F.2d 1081]¹³.

The Doctrine of File Wrapper Estoppel, also known as prosecution history estoppel or file history estoppel, is a legal principle in patent law that limits the scope of patent claims based on statements made by the patent applicant during the patent application process. It prevents patent holders from asserting a broader scope of patent protection than what was originally claimed or allowed during prosecution before the patent office.

Licensee’s Exemption from Liability

Any person who works a patented product, substance and/or process under a license granted under this Chapter (Compulsory Licensing), shall be free from any liability for infringement: Provided however, that in the case of voluntary licensing, no collusion with the licensor is proven.

• This is without prejudice to the right of the rightful owner of the patent to recover from the licensor whatever he may have received as royalties under the license [Sec. 102, RA 8293]¹⁴.